See response in context. I think the writer is are confused about some key
issues here. I hope this helps.
Andy Berks
> ----------
> From: Bill Murray[SMTP:billmurray2@hotmail.com]
> Sent: Thursday, August 03, 2000 12:09 PM
> To: piug-l@derwent.tecc.co.uk
> Subject: FWD: Introducing new claims - interesting question
>
> Non-member submission from ["gil" <gil@lagot.org>]
>
> Hi,
>
>
> If a WO patent was issued with a US patent as priority.
>>>WO documents are published patent applications - they are not patents and
not issued. I assume you mean here that a WO publication had a US
application as its priority document.
> The US patent =
> was accepted and published. Can the inventor add a new claim to the WO =
> patent, a claim that was not originally claimed in the priority patent =
> but that is mentioned as an example in the priority patent?
>>>You are not permitted to amend an original filing to add new material.
You can make corrections. If there was subject matter in the original (in
this case) US filing, you could probably amend the claims to add or delete
material as long as the added material was present in the original
specification. But to answer your question, the amended claims would not be
republished by the PCT. These kinds of claim amendments would likely be
handled at the national stage of prosecution, which is secret in the US.
New material requires a new priority filing. In the US, this is often a
"Continuation in Part".
> Could the priority patent (US) could be used as "prior art" against the =
> new claim in the WO patent??
>>>Since WO publications are not patents, this last question does not make
sense. You already said (I think) that the PCT publication was based on a US
application. Your own application is not prior art against you.
> Gill
>
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